Patent Law

Non-Contributor

By Gary Odom and Jordan Kuhn

A co-inventor is no inventor who adds nothing to a patent but the prior art, so the CAFC ruled last week. Though precedential, the appeal panel ruling is nothing new either. This in a case where a vehicle parts maker, Natron, sued its suppliers for patent infringement over a car seat with massage effect.

Natron v. Schukra and Borg Indak (CAFC 2008-1363)

Natron got a patent, 6,049,748, for a vehicle seat with massage capability. This after Natron contracted with Schukra for a control system for the masseuse task. "Borg Indak supplies electronic components to Schukra."

After getting the patent Natron turned around and sued its suppliers. A Schukra employee, Joseph Benson, had been an alleged co-inventor on the patent. Benton's contribution showed up in a dependent claim, for a lumbar support extender. Nothing new.

The inventors listed on the '748 patent, all Nartron employees, presumptively invented the control system. However, they admit that they did not invent the lumbar support adjustor including an extender recited in claim 11, as Nartron's inventive contribution consisted of a control module that operated on existing automobile seats, some of which already included extenders for lumbar support adjustors. Benson claims to have provided Nartron with the idea for the extender for a lumbar support adjustor, although he admits that the idea of an extender for a lumbar support adjustor in an automobile seat was in the prior art.

The district court had pulled the plug on Natron, dismissing the case because Benson, as a co-inventor, was required to have joined as a plaintiff in the suit.

The court reasoned that, contrary to Nartron's arguments, the '748 patent was not based exclusively on the control module and its software, and that the contribution of the mechanical extender to the claimed invention was not insignificant in quality because Benson had conceived of the massager unit and had developed a prototype. The court also found that there was no genuine issue of material fact regarding who had invented the extender because the named inventors had conceded that they did not invent the extender, and Benson had provided evidence that he had been working on a lumbar support frame or basket (which operated as an extender) that provided a massage effect.

Natron massaged its approach on appeal.

[A]ccording to Nartron, the inventive aspect of the claimed invention is the controller, and Benson did not conceive of the controller. Nartron argues that the specification states that the improvement is in the controller, not the hardware, of the automobile seat, and that the controller can be adapted to work with any automobile seat. Nartron also asserts that the drawings do not show any structure for the extender. Moreover, according to Nartron, irrespective of whether the extender for the lumbar support adjustor was in the prior art, Benson's alleged contribution is insignificant to the invention of the '748 patent. According to Nartron, one who merely poses a problem or suggests a possible result, rather than a means of accomplishing it, is not a joint inventor.

The CAFC panel agreed.

Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. "One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor." Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) ("[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art." (quotation marks omitted)). Moreover, a joint inventor must "contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention." Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387 F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)).

Here, Borg Indak asserts that Benson contributed the extender for a lumbar support adjustor. However, the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 ("The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art." (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 ("A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.").

"One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor." Garrett Corp. v. United States, 422 F.2d 874, 881 (Ct. Cl. 1970); see also Eli Lilly, 376 F.3d at 1359 (stating that one who is "too far removed from the real-world realization of an invention" is not a co-inventor); Ethicon, Inc. v. U.S. Surgical Corp., 937 F. Supp. 1015, 1035 (D. Conn. 1996) ("An entrepreneur's request to another to create a product that will fulfill a certain function is not conception--even if the entrepreneur supplies continuous input on the acceptability of offered products." (quotation marks omitted)), aff'd, 135 F.3d 1456 (Fed. Cir. 1998). Thus, Benson is not entitled to co-inventorship by simply posing the result to Nartron and leaving it to Nartron to figure out how to accomplish it.

Reversed and remanded.

Full post as published by The Patent Prospector on March 08, 2009 (boomark / email).